International Patent Protection – the Power of the PCT Application

In an ever-growing and increasingly competitive climate, many of our clients are turning their attention to protecting their intellectual property on a global scale. Enter: the Patent Co-Operation Treaty Application or, PCT Application.

What is a PCT Application?

It’s essentially a “placeholder” application that establishes a filing date for your invention, which can then be “nationalized” in any of the 156 countries that are members of the PCT. The PCT covers most of the major industrial countries of the world, but not Argentina, Bangladesh, Pakistan, Paraguay, Taiwan, Uruguay, or Venezuela. China is a member of the PCT. Taiwan is not.

A PCT application can be the first patent application you ever file, or it can claim priority to an earlier-filed application.

What is the Process of Filing a PCT Application?

The process generally looks like this:

  1. You file the PCT Application. You will also designate an International Search Authority (ISA), which is the patent office that will perform an initial review of the claims in your PCT application.
  2. Your ISA searches for prior art. Your ISA will identify what it deems to be relevant prior art in an International Search Report (ISR). Your ISA will then issue a non-binding Written Opinion (WO) that contains its view on the patentability of your claims. (If you designate the U.S. Patent Office, it aims to issue the ISR and WO within 9 months of the PCT filing date if the PCT application is the first application, or 16 months from the priority date if the PCT application is a subsequent filing). If the WO is favorable, you can enter prosecution early in some jurisdictions. If the WO is not favorable, you can amend the claims at various points during the PCT process.
  3. Your PCT application publishes approximately 18 months after the priority date.
  4. Generally, within 30 months (longer in some jurisdictions) from your priority date, you will “nationalize” the application in the countries you desire. Note that there are sometimes substantial costs for translation preparation and application filings in each of your selected jurisdictions.
  5. Each of your nationalized patent applications will then follow their own country-specific procedures for prosecution to grant. Your PCT Application itself will expire, and it alone cannot issue as an “international patent” (those don’t exist).

There are various benefits to filing a PCT Application instead of starting off with separate patent applications in each country, including deferral of costs and time constraints and the prior art that necessarily gets created when a PCT Application gets published. This can be an effective and efficient way for companies to ensure that their provisional patent applications in the United States are primed for globalization.